Articles Posted in Trademark Application Refusal

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In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive refusals. It should be noted that the Examining Attorney first refused the application based on the grounds of the mark being merely descriptive of the goods. Once the Applicant raised the issue that its goods did not have features that could be described as clear or transparent, the Examining Attorney then refused the application on the alternative ground that the proposed mark is deceptively descriptive of the goods. In the final office action, both 2(e)1 refusals were maintained, and the id was amended to exclude “transparent goods”. The Applicant filed an appeal.

It is important to keep in mind that the Examining Attorney’s primary objective is to protect the public from confusion or deception. Based on use of Dolce Vita Footwear Inc.’s (Applicant’s) proposed trademark CLEAR for apparel, bags, and footwear the Examining Attorney argued that the public will believe that the branded goods are transparent or clear. The determination that the mark is misdescriptive is based on evidence showing it is common in the fashion industry to have clear footwear, clothing, and bags even though Applicant amended the id to exclude transparent goods.

The Examining Attorney submitted definitions for the term “Clear”, screenshots from the Applicant’s website showing descriptive use of the word “Clear”, and webpages from competitors’ websites in the fashion industry. These screenshots demonstrated use of the term “Clear” in conjunction with features such as transparent straps or heels on footwear or features of lingerie, skirts, dresses or bags. For the second prong of the test, the “reasonably prudent consumer” test is applied.

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In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 & 45 of the Lanham Act. See our blog post entitled, The TTAB’s Recent Decision Clears A Path For Titles Of Single Works, where we discuss the matter, In re King Productions, Inc., Serial No. 76703458 (November 19, 2014)[not precedential]. In re King Productions, Inc., opened the door for the Board to abandon its previous position that any single title to a creative work, such as a book, movie or play would not be able to function as a trademark and therefore not be able to register on the Principal Register or the Supplemental Register. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127.

The Federal Circuit Court of Appeals (“CAFC”) has affirmed the position that single titles of works cannot act as source indicators. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). The Board had issued consistent decisions such as,  In re Arnold, 105 USPQ2d 1953, 1954 (TTAB 2013) (“It is well settled that the title of a single creative work is not considered a trademark and is, therefore, unregistrable….”), until late 2014. Consistency broke in 2014, with the Board’s In re King Productions, Inc., decision that stated single titles are descriptive marks that may be able to acquire secondary meaning. However, the latest Board decision makes it clear that single creative titles cannot acquire distinctiveness. See In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential].

The applicant in In re Rothman, was seeking to register the mark, THE NEUROTIC PARENT’S GUIDE, in standard characters, for books on colleges and college admissions. Applicant’s mark was refused on the traditional grounds that the mark was a title to a single creative work. Applicant asserted that in addition to the book shown in the specimen the mark has been used on her blog in connection with colleges and the admissions process since 2008. The applicant argued that the blog although it is in a different medium would constitute use for a series. The Examining Attorney argued that to qualify as a series, the works must be in the same medium. Applicant, then made an argument in the alternative that the mark had acquired distinctiveness over the course of eleven years of use. The Examining Attorney made the refusal final and applicant appealed.

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My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office when marks include geographic terms. These are known as a Section 2(e)(2), geographically descriptive refusal and a Section 2(e)(3) geographically deceptively misdescriptive refusal. See also our firm page entitled, Common Grounds For Refusal Of A Trademark, for more information on Office Action refusals.

A mark is found to be geographically descriptive if: (1) the primary significance of the mark is a geographically known location; (2) the goods or services originate in the geographic location named in the mark; and (3) the purchasers would believe the goods or services originate in the location named in the mark. It should be noted when the mark names a known geographic location and the goods or services are from that location, it’s presumed that consumers would believe the products or services originate from the place named in the mark. If the mark is a composite mark and includes other elements besides the geographic place, and the other parts of the mark are inherently distinctive this may carry the mark. Under this circumstance a refusal may be avoided. However, adding descriptive or generic wording to the name of a geographic place will not alter its primary geographic significance.

Typically, the most challenging part of the analysis is determining if there is a goods place association when the goods or services are not from the geographic location. For example see In re Zeller, Serial No. 77544307 (September 30, 2009), where the applicant was seeking to register the mark CATALINA ISLAND GRANOLA & Design for granola. The Board found that the primary significance of the mark was geographic. The applicant lived on Catalina island, but declared the goods did not originate on Catalina Island, and the goods would not be manufactured there, but may be sold on the island. The next inquiry is would there be a goods place association. The record did not contain evidence that Catalina Island was known for producing food products like granola. The record showed that Catalina Island had agricultural concerns and did very little manufacturing. The fact that the applicant lived on Catalina Island, and would sell her goods there was not enough for a goods place association. The geographic place named in the mark would have to be associated with the granola in a way that the consuming public would believe that the granola originated there. The Board reversed the refusal.

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A couple of weeks ago, the Board issued a decision (although not precedential) that will be helpful to those applicants submitting Responses to Office Actions to surname refusals, see In re Fair Isaac Germany GmbH, Serial No. 87424333 (May 28, 2019). This case is interesting because it reverted back to placing emphasis on the rareness factor (see our blog post entitled, TTAB’s Precedential Decision That Further Shifts Surname Case Law). In addition, it accorded particular weight to the fact that no one associated with the applicant used the mark as a surname. Finally, I believe this decision may be the tipping point wherein the Board has determined that simply pointing out that no dictionary definition exists for the mark, will not be sufficient to prove that the mark will be perceived primarily as a surname with no other meaning.

In this case, the applicant was attempting to register the mark SIRON for anti-fraud computer software. Among the factors to be considered in determining whether a term is primarily a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant uses the term as a surname; (iii) whether the term has any other recognized meaning other than a surname; and (iv) whether the term has the “look and feel”’ of a surname or the structure and pronunciation of a surname; and (v) whether the term is sufficiently stylized to remove its primary significance of that of a surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). See also, Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].  For more information on this topic, see the firm page entitled, Can You Use Your Name As A Trademark?

These factors are not exclusive, any relevant circumstances may be considered in the determination. There is no rule about the kind or the amount of evidence that is necessary to show that the applied for mark would be perceived as primarily a surname. If there are any doubts, doubts should be resolved in favor of the applicant. See In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). 

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In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act.  See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential].  The court stated that the specimen did not qualify as a display associated with the goods. The applicant had tried to register the mark CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories”. The applicant argued that its specimen, images of its website should be acceptable as a point of sale display associated with the goods. The Examining Attorney objected because the specimen did not include a means for ordering the goods.

The image of the webpage showed the goods with the mark CASALANA, and an explanation of the goods. Near the bottom of the webpage it stated, “For sales information” and there was a telephone number and email address in close proximity inviting customers to call. The Board relied on the case of In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the rule that an invitation to call the applicant for additional information, including obtaining a quote for an order, does not provide a means for ordering the product. The rationale for this rule is that before acquiring this information via telephone, the customer did not have enough information to place an order.

Typically a display associated with the goods will contain information such as pricing details, order size, payment options, and information about shipping. If such information is provided, enough to allow the customer make a purchasing decision, along with contact information, it’s possible that a website could act as a display associated with the goods (assuming purchasers actually placed orders over the phone or through an email after viewing the information).  If all the important information to purchase the goods was acquired through another means other than the website, the website did not function as an example of use of the mark in commerce. See our webpage entitled, For Purposes Of Trademark Law, What Is Use In Commerce, for more information on this topic.

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Applicant was seeking to register the mark HONEYHOLE SANDWICHES in standard characters with a disclaimer on “sandwiches” for “restaurant with bar specializing in serving proprietary unique sandwiches, local beers, and alcohol in a vibrant eclectic environment”. The Examining Attorney refused the application due to a likelihood of confusion with the registered mark HONEYHOLE for alcoholic beverages except beer. The applicant appealed the refusal, the Board affirmed and required a “something more” showing to prove relatedness between restaurant services and alcoholic beverages. See In re Honeyhole Sandwiches Inc., Serial No. 87138294 (May 22, 2018) [not precedential].

When considering the similarities of the marks, the Board found them very similar in sight, sound, connotation, and commercial impression. This factor weighs in favor of confusion. There was no evidence of record to show the mark was commercially weak, therefore the sixth du Pont factor (the number and nature of similar marks on similar goods) also weighs in favor of confusion. Next the Board considered if the goods and services were commercially related. This evaluation must be based on the identifications in the application and registration. The Board noted that the “something more standard” cited by the Federal Circuit court had to be kept in mind. For more information on the “something more” rule imposed by the Federal Circuit, see our blog posts entitled, The Origin of the Something More Standard In Trademark Law, and The Federal Circuit Expands The Application Of Its Something More Standard. It has long been held that when analyzing one party’s services for providing food, i.e. a restaurant, and another party’s food and/or drink products, the fact that a restaurant may offer particular food or beverages doesn’t mean the parties’ goods and services are related.

Evidence must be produced that demonstrates something in addition to either similar or identical marks used for restaurant services and another’s food or beverage product. See In re Coors Beers Brewing Company, 343 F.3d 1340, 68 USPQ2d 1059 Fed. Cir. (2003), where there was no showing of “something more” sufficient to justify a relatedness between beer and restaurant services. Often, “something more” will be found if the restaurant specializes in the other party’s food or beverages. Moreover, if the Board finds that the mark is strong and of an arbitrary nature, this will be a factor weighing in favor of finding “something more”. In the case at bar, the mark HONEYHOLE was found to be commercially strong for alcoholic beverages. Moreover, the applicant’ identification states it serves alcohol and its menu demonstrates use of the mark HONEYHOLE for cocktails.

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Since the precedential decision of  In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in the marketplace. For more on the influential case of In re Bay State Brewing Co., see our blog post entitled, A Recent TTAB Decision Impacting Consent And Coexistence Agreements. After the issuance of this decision, other decisions followed in the trend of rejecting Consent Agreements. The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential]. This decision affirmed the refusal of the Applicant’s mark and stated that the restrictions set forth in the parties’ Consent Agreement would not eliminate confusion in the market place.

8-Brewing LLC, (the “Applicant”) was seeking registration on the Principal Register of the mark, 8-BIT ALEWORKS, for beer in standard characters. The mark was refused due to a likelihood of confusion with the registered mark 8 BIT Brewing Company (a word mark and also a design mark with the same literal terms) for beer, ale, lager, stout and porter, malt liquor and pale beer. The parties submitted a Consent Agreement as part of the record of evidence. A Consent Agreement is evaluated under du Pont factor ten, the market interface between the Applicant and the owner of a prior mark.

The Board commenced its review with the goods identified in the trademark application and registrations. Part of the parties’ identifications is identical, “beer”. Because there is an overlapping identical good, it is presumed that the channels of trade and classes of purchasers are the same. Another presumption that attaches when the goods are identical is the “degree of similarity necessary to support a conclusion of likely confusion declines”. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The relatedness of the goods as described in the application and registrations, weigh in favor of finding a likelihood of confusion.

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In this recent Trademark Trial and Appeal Board decision, In re Fowles Wine Pty Ltd., Serial No. 79157017 (September 15, 2017) [not precedential], the Board affirmed the refusal of the Examining Attorney. The interesting aspect to this decision is one of the grounds for refusal was failure to function as a trademark (the other ground was the mark was merely descriptive of the goods). The Applicant was seeking to register the mark FARM TO TABLE for wines in standard characters. After the refusal was made final, the Applicant appealed to the Board.

To support the refusal, the Examining Attorney submitted printouts from numerous commercial websites, illustrating how third parties in the industry use the term “Farm to Table”. These web pages included excerpts and references such as: (1) “Farm to Table Wine Dinners…”; (2) “Farm to Table Wine and Cooking Adventure”; (3) “Farm to Table Wines…”; (4) “Freas Farm Winery is focused on serving high quality farm to table wines”; (5) “Farm to Table Wine Tasting featuring local farmers and organic wines from Bonterra Vineyards…”; and (6) “Farm to Table Wine and Food”. In addition, the Examining Attorney introduced into evidence articles from major newspapers discussing the phase, Farm to Table in connection with wine.

In an attempt to counter this evidence, the Applicant submitted third-party registrations for FARM TO TABLE formative marks for food products and related services. The Board held that the multiple third-party registrations were of little probative value because the printouts did not show if such registrations were allowed to register under a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. In addition, the printouts did not show if the registrations required a disclaimer or if the registrations registered on the Supplemental Register.

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A precedential decision from earlier this year reinforces the fact that Consent Agreements may not always tip the scales in favor of trademark registration. A consent agreement is a type of coexistence agreement submitted to Examining Attorneys at the United States Patent & Trademark Office (“USPTO”) in an attempt to demonstrate that confusion will not occur in the marketplace. See In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential], where the Board determined that the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion grounds. Typically consent agreements are given great weight in a likelihood of confusion analysis, see our web page entitled, Is A Co-Existence Agreement The Right Choice For Your Brand , where we discuss the pros and cons of entering into this type of agreement.

Bay State Brewing Company (the “Applicant”) filed a trademark application to register the mark, TIME TRAVELER BLONDE, in standard character format for beer. The application was refused based on a prior registered mark for TIME TRAVELER also for beer, ale and lager. The Applicant appealed to the Trademark Trial and Appeal Board (“TTAB” or the “Board”). Although the Applicant admitted that there is a likelihood of confusion between the sources of the marks, Applicant argued that it entered into a consent agreement that would lessen the likelihood of confusion between the marks. It is well settled precedent that a consent agreement relates to the market interface between the parties (du Pont factor number ten).

Other du Pont factors were considered, such as the relatedness of the goods. The goods were identical. Both parties used its respective mark to brand beer. Regarding trade channels, because the goods were in part identical, there is a presumption that the classes of consumers and trade channels are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721 (CCPA 1968). Regarding, the sophistication of the consumers, it was noted that beer is inexpensive and often purchased on impulse. Therefore, the risk of confusion among consumers is increased. In comparing the marks’ similarities, the marks are identical except for the term, “blonde”. In the beer industry, the term “blonde” is generic or at least highly descriptive. The Examiner required a disclaimer of the term “blonde”. The Board concluded that the commercial impression of the Applicant’s mark is that it is the blonde brew of TIME TRAVELER. Also weighing in favor of confusion is the fact that the mark TIME TRAVELER is an arbitrary mark entitled to a broad scope of protection.

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Florists’ Transworld Delivery Inc. (the “Applicant”) attempted to register its mark, a slogan, SAY IT YOUR WAY for two types of services. Only one service is at issue on appeal before the Trademark Trial and Appeal Board (the “Board”). The Examining Attorney refused the application for “creating an on-line community for registered users to participate, in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products, and gifts” in international class 42. The refusal was based on the applicant’s specimen failing to show the mark used with the services identified in Applicant’s trademark application. Applicant attempted to submit a substitute specimen that also failed to evidence the mark used with the relevant services. See In re Florists’ Transworld Delivery, Inc. Serial No. 85164876 (May 11, 2016).

Applicant’s specimen consisted of pages from his Twitter account located at https://twitter.com/ftdflowers. Applicant argued that the pages reflected discussions between the Applicant, its fans and customers. He further argued that Twitter is a social media service that permits its users to post short messages and for the messages to be viewed by those who follow that user’s account. In circumstances of a service mark application, the specimen must show the trademark as used in the sale or advertising of the services. See In re Graystone Consulting Assocs., Inc. 115 USPQ2d 2035 (TTAB 2015), where it was held that a service mark must be used in a manner that is readily perceived as identifying the services by relevant consumers. This is determined by a thorough review of the specimens.

Service mark specimens typically consist of advertising, promotional, and informational material and these may include pages from a website or pages from a Twitter account. However, the pages must show the mark in the advertisement of the services identified in the trademark application and create an association between the mark and the services. Use of the trademark must also identify and distinguish the services. This point is illustrated in the case In re Johnson Controls, Inc. 33 USPQ2d 1320 (TTAB 1994).

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